22 Oct
2020

United Kingdom

HGF Limited

Q: How can patent owners best enforce their rights in your jurisdiction?

The Patents Court (part of the Business and Property Courts of the High Court) is the primary route for enforcement of patents in the United Kingdom, with the Intellectual Property Enterprise Court (IPEC) able to hear shorter, lower value, less complex patent actions. Scotland and Northern Ireland do not have specialist patents courts, but patent cases can be heard in Scotland and Northern Ireland.

Q: Are mediation and arbitration realistic alternatives to litigation?

Parties are obliged to consider whether alternative dispute resolution (ADR) is suitable both before and during proceedings. Unreasonable refusal to consider ADR may attract cost sanctions. Arbitration is a route that is being increasingly utilised, particularly where confidentiality is important.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

At first instance, cases are heard by a single judge sitting alone. Complex cases are allocated to the specialist High Court patent judges. Less complex cases may be allocated to Chancery Court judges or Deputy High Court judges who have been designated to hear patents cases.

At the IPEC, cases are heard by IP specialist Judge Hacon or by deputy judges or recorders.

Appeals are heard by a panel of three Lord or Lady Justices of Appeal. At the Supreme Court, there is usually a panel of five justices.

Q: What level of expertise can litigants expect from courts?

The Patents Court offers a high level of specialist IP expertise.

Many of the Patents Court judges previously practised IP law and have technical backgrounds. Deputy Court judges are drawn from a pool of specialist IP barristers and solicitors.

There are also a number of former Patents Court judges sitting as Lord Justices of Appeal at the Court of Appeal, as well as justices of the Supreme Court.

Q: Are validity and infringement dealt with together in proceedings?

Patent validity and infringement are heard together and there is no bifurcation.

Q: Who may represent parties engaged in a dispute?

Parties are represented by teams of barristers, solicitors and patent attorneys. Solicitors prepare and manage the case for trial, including liaising with the other side. Barristers (usually a senior Queen’s Counsel and junior) are specialist advocates who conduct cross-examination and present arguments to the court during oral hearings.

At the IPEC, the legal team is much smaller; barristers, solicitors and patent attorneys may represent the parties.

Q: To what extent is forum selection possible in your jurisdiction?

The majority of patent actions are heard in the Patents Court in England and Wales, with very few patents cases heard by the courts of Scotland and Northern Ireland.

The IPEC was created to offer a less costly option for smaller businesses.

Q: To what extent is pre-trial discovery permitted?

Disclosure is possible before and during proceedings, including in some circumstances from third parties. Increasingly, however, disclosure requests are heavily scrutinised by the Patents Court.

Pre-action disclosure is possible where both parties are likely to be a party to proceedings, and where it is desirable to dispose fairly of the anticipated proceedings, assist resolution of the dispute without proceedings or save costs.

Disclosure relating to validity is limited to a four-year window from the patent’s priority date (ie, two years before and two years after). For disclosure relating to infringement, the alleged infringer can elect to give documentary evidence (including a sample) or a product and process description, which must give full particulars of the product or process alleged to infringe.

At the IPEC, there is no automatic right to disclosure and its grant is a matter of case management for the judge.

Q: To what extent is evidence written and oral at proceedings?

Evidence in chief for witnesses and experts are exchanged before the trial date. At trial, the written statement stands as the witness’s or expert’s evidence in chief and there is no requirement for this to be read out in full or given orally at the beginning of their testimony.

Oral evidence is limited to replies to the questions put in cross-examination by the other party’s barrister. Limited re-examination (without leading the witness) by the witness’s or expert’s party’s barrister is possible to draw out or correct any point from cross-examination.

Q: What role, if any, can expert witnesses play?

Expert evidence is often determinative of patent actions. It is of paramount importance to ensure that the legal team has the expertise to identify the correct experts, instruct them correctly (particularly to avoid any allegation of hindsight) and to work with them to draft the expert report.

Experts have a duty to help the court on matters within their expert knowledge and this overrides any obligation to the party who has engaged them. They must be objective, give their unbiased opinion and ensure that the matter is within their expertise. Experts must not be coached on their oral testimony.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

There is a two-stage test for the doctrine of equivalents:

  • Does the variant infringe any of the claims as a matter of normal interpretation?
  • If not, does the variant nonetheless infringe because it varies from the invention in a way or ways that are immaterial?

For the second question, there is a three-stage test:

  • Notwithstanding that it is not within the literal meaning of the relevant claims of the patent, does the variant achieve substantially the same result in substantially the same way as the inventive concept revealed by the patent? If yes;
  • Would it be obvious to the skilled person reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? If yes;
  • Would the skilled person have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim or claims of the patent was an essential requirement of the invention? If no, then the variant will infringe.

There is no prosecution history estoppel as such, and the court will only consider this in particular and limited circumstances.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

The Patents Court is a sophisticated, specialist forum for all types of patent dispute.

Some subject matter is excluded from patentability, including:

  • discoveries, scientific theories or mathematical methods;
  • schemes, rules or methods for performing a mental act, playing a game or doing business, or a program for a computer; and
  • the presentation of information.

However, the exclusions apply only to the extent that the patent relates to the thing ‘as such’.

Many biotechnological inventions are patentable, but exclusions include the human body and its elements, including gene sequences, as well as other processes that are considered contrary to public policy on ethical grounds, such as:

  • cloning humans or modifying the germ line;
  • using human embryos for commercial or industrial purposes;
  • genetically modifying animals in ways likely to cause suffering without substantial medical benefits; and
  • patenting varieties of animals or plants (or biological process for their production), not being a microbiological or other technical process or the product of such a process.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

The ‘ratio’ is the part of a judgment that sets out the legal reasoning for the decision made and creates the binding precedent that must be followed by inferior courts.

Judgments of the Supreme Court (and its predecessor, the House of Lords) bind all other courts in the United Kingdom. The Supreme Court can depart from its own decisions, but rarely does so. The Court of Appeal is usually bound by its own decisions and, unless distinguishable on the facts, its judgments bind the Patents Court.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Judgments of courts in other jurisdictions relating to the same patent, must be brought to the attention of the judge. Judgments of key European patents courts, as well as decisions from the Enlarged Board of Appeal and the Technical Boards of Appeal are of interest, albeit not binding. Judgments by Commonwealth courts are also considered.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

Procedural rules provide for a timetable to a case management conference. At the case management conference, any outstanding points on the timetable are decided by the court, including fixing a trial date. Parties can agree to and apply for extensions for most deadlines, provided that this does not jeopardise the trial date itself. Causing a delay leading to the trial being vacated is likely to attract cost sanctions.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

The grant of a preliminary (interim) injunction requires ascertaining where the balance of convenience lies. The patentee must show that there is a serious issue to be tried. The court must determine whether damages would be an adequate remedy for the patentee. If not, the court must consider the adequacy of the patentee’s cross-undertaking in damages. If there is no adequate remedy for either side, then the court must consider all other relevant factors, including the status quo.

Except in the context of pharmaceutical patents, where generic entrants are expected to ‘clear the way’, it has been difficult for patentees to demonstrate that they will suffer irreparable harm. As a result, interim injunctions are rarely granted.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

Without expedition and for a standard action, it should be possible to get a first-instance decision within 12 to 14 months of proceedings being issued.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

For a straightforward case where validity and infringement are in issue, a party should budget for the costs to exceed £600,000 (including the fees of the legal team and experts, as well as court fees and other disbursements). For more complex or valuable cases, costs can exceed £1 million.

At the IPEC, for a straightforward case where validity and infringement are in issue, a party should budget for the costs to be between £200,000 and £350,000 (including the fees, as above).

Q: To what extent are the winning party’s costs recoverable from the losing party?

In general, there is a principle that the losing party pays a proportion of the winning party’s costs.

The proportion of costs that are recoverable may depend on the issues that a party has won and whether a costs budget is in place. Typical levels of recovery range from 60% to 75%. Recovery can be affected by deduction and off-setting for an issue ‘lost’ by the overall winner. Where costs budgets are in place, recovery can be significantly higher and up to 100%. Parties’ offers to settle before and during proceedings can also be taken into account by the court in awarding costs.

At the IPEC, costs recovery is capped at £50,000 and can be awarded at a lower level.

Q: What remedies are available to a successful plaintiff?

The following remedies are available to a successful plaintiff:

  • damages or an account of profits;
  • a final injunction;
  • delivery up or destruction of infringing goods on oath;
  • a declaration by the court;
  • costs; and
  • publication of the judgment.

Q: How are damages awards calculated?

Damages are intended to put the patentee in the same position as if the infringement had not happened, allowing recovery for loss suffered that was foreseeable, caused by the infringement and not otherwise excluded for policy reasons. An inquiry for a claim under a cross-undertaking in damages should look into the loss that was suffered because of the injunction.

A patentee must elect between damages or an account of profits, with the assessment conducted after the trial on liability. An account of profits is confined to profits actually made to prevent the infringer’s unjust enrichment from the infringement and, for that reason, most patentees elect for an inquiry for damages.

At the IPEC, the recoverable amount under a damages inquiry or account of profits is limited to £500,000.

Q: Under what circumstances will courts grant permanent injunctions?

Injunctions are discretionary but are usually granted post-trial by the court. Injunctions can be stayed pending appeal.

Q: Does the losing party at first instance have an automatic right of appeal?

There is no automatic right of appeal. Appeals are available in respect of points of law only where there is a real prospect of success or there is some other compelling reason for the appeal to be heard. Appeal from the Patents Court and the IPEC is to the Court of Appeal.

Parties are expected to seek permission to appeal from the trial judge first. If refused they can seek permission from the Court of Appeal.

Q: How long does it typically take for the appellate decision to be handed down?

For an appellate decision to be handed down, it takes about 10 to 15 months; expedition is possible.

Q: Is it possible to take cases beyond the second instance?

Appeals to the Supreme Court are possible but only in cases where, in the opinion of the justices, an arguable point of law of general public importance is raised and which should be considered by the Supreme Court at that time. The Supreme Court has considered certain issues concerning patent law recently, but this remains a low number of cases annually.

Permission to appeal to the Supreme Court must be made first to the court below and then, if refused, to the Supreme Court. Exceptionally, the Supreme Court may entertain a ‘leapfrog’ appeal, that is an appeal directly from the Patents Court.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

The Patents Court has a reputation as a forum for testing patents fairly but rigorously. In more recent years, there has been a slight shift towards more patents being upheld.

The introduction of the doctrine of equivalents and judgments granting global FRAND licences, has provided opportunities for patentees, but equally, the availability of ‘Arrow declarations’ has afforded would-be market entrants the ability to cut through patent thickets in a single action.

Q: Are there other fora outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

Not applicable.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The Patents Court provides a forum to obtain a quick, well-reasoned judgment on infringement and validity from specialist judges that are well-respected in the courts of other European Patent Convention jurisdictions. The Patents Court also has the legal tools to, inter alia:

  • set a FRAND rate;
  • grant a global FRAND licence;
  • grant Arrow declarations;
  • order disclosure;
  • cross-examine the technical evidence; and
  • award costs to the winning party.

HGF Limited

140 London Wall

London

EC2Y 5DN

United Kingdom

Tel + 44 141 229 5800

Fax + 44 141 229 5801

Web http://www.hgf.com

Rachel Fetches

Partner

[email protected]

Rachel Fetches is a solicitor and patent litigation partner at HGF. She works across a range of sectors, including life sciences, biotechnology, pharmaceuticals, healthcare and chemicals industries, and advises clients in the advanced engineering and electronics sectors. She has extensive experience litigating before the UK Patents Court, as well as advising in opposition proceedings. Ms Fetches regularly coordinates complex, multijurisdictional patent litigation, advising clients on achieving an effective patent litigation strategy. She has a BSc in cell biotechnology from the University of Alberta and a master’s in healthcare ethics from the University of Leeds. She has also obtained postgraduate law qualifications from the College of Law and a postgraduate diploma in intellectual property from the University of Bristol.